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The Intellectual Property StrategistFeaturesCopyrightsIntellectual PropertyLitigationUnited States Supreme Court

The Supreme Court Finally Resolves An Old, Vexing Question: Does "Registration" Mean "Registration"? Answer: "Yes."

By James A. Trigg and Bethany R. Nelson

It is hard to imagine the current U.S. Supreme Court agreeing on something as simple as their lunch order in a time when 5-4 decisions feel like the norm. So, when it unanimously agrees, one might conclude that the question at hand was not very difficult. Not so here. In Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (March 4, 2019), the Supreme Court resolved a circuit split decades in the making by holding that a copyright is not "registered" within the meaning of the Copyright Act unless and until a registration certificate actually has issued. The Supreme Court's short opinion upheld an Eleventh Circuit decision, and undertook no more than a simple statutory construction analysis, finding that the plain language of the Copyright Act cannot be ignored because of hypothetical ill effects, especially ones fully within the purview of Congress to fix. A plaintiff cannot sue for copyright infringement until registration has issued, or been denied by the Copyright Office; a mere pending application will not suffice.

The Circuit Split

The statutory language that caused the circuit split comes from Section 411(a) of the Copyright Act, which provides that "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." That language may seem clear, but practice questions and pragmatism muddled the seemingly clear language.

The vexing situation is as follows: your client, a copyright owner, wants to sue for copyright infringement and wants to sue quickly — after all, each day its work is infringed it is losing money. You, the lawyer, inform your client that the good news is registration is not required for copyright protection. "Great," your client responds, "Let's file suit!" "Hold on," you counsel. "You do not need a registration for protection, but you do need one to file suit, and if we apply to register today, the average wait time for a registration to issue is several months. Will that work?" Your client is less than elated.

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